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Genericness survey cited as a basis for ruling that the trademark is not generic

In the end, a consumer survey helped carry the day for

The matter, B.V. v. Matal, was interesting in that plaintiff filed a civil action challenging the TTAB’s finding that the mark “BOOKING.COM” is generic for travel agency services and hotel reservation services. On cross motions for summary judgment, the district court reversed in part the Board’s finding.

In analyzing whether or not “BOOKING.COM” is generic, the court focused on what the primary significance of the term is in the minds of the consuming public. After reviewing the dictionary definition, the court found that the term “booking” alone was generic for the classes of services in question. However, the court also considered whether the term resulting from combining “booking” and “.com” remained generic. In other words, whether combining a generic second-level-domain (SLD) with a top-level-domain (TLD) is potentially protectable. The court concluded that “a TLD generally has source identifying significance and that a mark composed of a generic SLD and a TLD is usually a descriptive mark eligible for protection upon a showing of secondary meaning.”

The court also relied upon survey evidence of the relevant consuming public’s understanding of “BOOKING.COM”. The plaintiff produced a Teflon style genericness survey which showed that a significant percentage of respondents identified “BOOKING.COM” as brand name. The court found the survey results to be “persuasive evidence that the consuming public understands ‘BOOKING.COM’ to be a specific brand, not a generic name for online booking services”. The court also went on to state that “numerous courts agree that ‘direct consumer evidence, e.g., consumer surveys and testimony is preferable to indirect forms of evidence’ such as dictionaries, trade journals, and other publications.”

This is yet another case where a consumer survey was cited by the court as a basis for their ruling.

To learn more about genericness surveys and how they can be submitted and accepted as evidence in litigation matters, contact Applied Marketing Science (AMS) trademark survey expert Brian Sowers.

Genericness, Trademark